WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Case No. D2004-0328
1. The Parties
The Complainant is Sarah Kozer, Los Angeles, California, United States of America, and is represented by Fiszer & Loomis, LLP, Los Angeles, California, United States of America.
The Respondent is Sarah Kozer, Amsterdam, The Netherlands.
2. The Domain Name and Registrar
The disputed domain name <sarahkozer.com> is registered with Tucows, Inc., Toronto, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2004. On May 5, 2004, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On May 5, 2004, Tucows, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contacts. The Center, on May 10, 2004, verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 10, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2004.
The Center appointed James G. Fogo as the sole panelist in this matter on June 8, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the proceeding was English.
4. Factual Background
Through its attorneys, the Complainant asserts the following facts, which have not been disputed by the Respondent:
(a) The Complainant is a young woman, known in her professional endeavors by her given name “Sarah Kozer”
(b) Since December 2000, the Complainant has used the name “Sarah Kozer” to identify her performance services as a model, actress, and participant in television programming and motion pictures. By reason of her activities, she has become widely recognized in many parts of the world having been featured on the cover of an internationally distributed magazine and in celebrity news and entertainment magazines as well as through her performance services in modeling, acting and television production.
(c) On April 20, 2004, Sarah Kozer caused to have an application filed in the United States Patent and Trademarks Office for registration of the mark “SARAH KOZER” applied to services defined as follows: “Entertainment services, namely, the rendering of entertainment to the general public on the Internet, print media, television programs and motion pictures”. The dates of first use and first use in commerce provided were the same, both stated to be December 15, 2000.
5. Parties’ Contentions
(a) The Complainant does not rely on a registered trademark but rather alleges that she has achieved common law rights by reason of her activities which have led to recognition as a celebrity in association with television, print media and motion pictures.
(b) The Complaint contends that the disputed domain name <sarahkozer.com> is virtually identical to and confusingly similar to a common law mark in which the Complainant has rights.
(c) The Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
(d) The Complainant contends that in taking Sarah Kozer’s name, the Respondent both registered and used the domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 15(a) of the Rules instructs the panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.” The threshold inquiry is first, whether the Complainant has rights in a relevant trademark, and secondly, whether the domain name is the same as, or is confusingly similar to the first mark. It is not an essential for the Complainant to show a registered trademark for certain named services. The Complainant has not alleged nor relied on the pending U.S. registration for the mark but rather based on the highly recognized celebrity gained over a relatively short time.
Prior to the later part of the year 2002, the Complainant had explored various opportunities including modeling and acting. She was invited to try out for a form of television entertainment which is now referred to as Reality television. Fox Television was casting for parts in a seven week series titled “Joe Millionaire”. The story line represented a wealthy man seeking a beautiful bride. The participants and crew were flown to France for preparation and filming. Sarah Kozer was one of twenty women competing to be the one surviving person chosen and she gained notoriety as being one of the two finalists. The program was aired on a weekly schedule from January 6th to February 17, 2003. Reports provided later, disclosed that Fox had delivered the best ratings for evening programming in its history. It was estimated that for the final episode, a two hour show, more than 17 million were viewing the program. The millionaire turned out to be an actor of modest means. Most valuable to Sarah was a very great exposure to the public in her field.
In the course of the program, it was revealed that at an earlier date, Sarah Kozer had posed for bondage and fetish photographs, said to have been required to pay off past student loans. Her identity was revealed but this appeared to only increase interest on the part of the public.
Within a short time after the end of the Fox program, the Playboy magazine approached the Complainant to sit for photos to be used in its magazine. She rejected the request twice but then agreed on terms which included the front cover shot as well as other photos in the magazine. The issue in which she appeared was published in June, 2003. A measure of the extent of celebrity that would be created by an appearance upon the front cover of Playboy can be appreciated from a disclosure in WIPO Case No. D2002-1156. Information provided in Playboy Enterprises International, Inc. v. Domain Active Pty Limited, WIPO Case No. D2002-1156 gave a rough estimate of the volume of circulation of Playboy magazine at that time . The monthly circulation of the U.S. edition of the magazine quoted shortly before the June 2003 issue, as being approximately 3 million copies. Subscribers outside the United States were said to be sent copies of Playboy magazines to more than 110 countries of the world. Thus acts of the Complainant in modeling gave further celebrity status.
Since these events, the Complainant has hosted for various television entertainment news programs, including her notable segments for the popular television show Extra! She has also been writing for US Weekly Magazine expanding her career in the fields of print and broadcast journalism. Other projects were said to be proposed.
In the months of September/October 2003, the Complainant teamed up with others to participate in the production titled Reality Review, a new musical, to be opened in Las Vegas.
In February 2004, the Complainant was invited to England to participate in a second reality game. Her arrival prompted coverage with photos and text from members of the UK press.
In these fields in which the Complainant has commercially worked, it has been accepted in a series of decisions that performers and authors may have rights in the names by which they become well known in their field. Performers can establish rights through expanding the use of the names as source indicators in commerce. They have unregistered or common law rights to protection against misleading use by others.
While the Complainant in this case has still to complete an application under process in the United States Patent and Trademark Office, it is clear that she has received recognition and celebrity in association with her activity in television, motion pictures and print media.
There appears not to be any fixed standard of how long one must act or wait before qualifying as a celebrity. It has been suggested that the measurement should be related to the kind of reputation which could warrant protection against passing off. Certainly notoriety and reputation in commerce can be acquired in very short order when exposed to country wide and world wide exposure in the course of presentation.
The Panel is satisfied that there has been sufficient recognized celebrity on the part of the Complainant to warrant protection against another who takes a similar mark for the sole purpose of attracting others who would be misled when directed to links relating to pornography.
The disputed domain name is the same as the Complainant’s name with only “com” added. For comparison purposes under the Policy, it is customary to discount the generic TLD “com”. It is apparent that the mark and the domain name are identical.
B. Rights or Legitimate Interests
The Complainant asserts for the purposes of Paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in respect of the domain name and relies on the fact that the Respondent is diverting Internet traffic to three commercial websites.
The Respondent’s domain name was registered on January 29, 2003, after the fourth week of the “Joe Millionaire” program. This was after the Complainant’s rise in popularity and after the disclosure of her part in bondage and fetish movies. There can be no other explanation than that the Respondent saw an opportunity by registering an identical mark solely for the purpose of diverting traffic to other sites with no legitimate use of the Complainant’s name.
The Complainant has not licensed, consented or otherwise authorized the Respondent to use her name, nor to permit others to do so. The Respondent does not transact in goods or services related to the Complainant. The Respondent’s website is merely misrepresenting that the site was the home page of Sarah Kozer and that she lives “in the beautiful city of Amsterdam”. The Respondent has then listed on the same page the names of three commercial links, a pornographic website link, a bondage website link and a dating service link. The Respondent is merely using the Respondent’s site as a hypertext link to what appears to be a number of adult or pornographic sites as a means to commercially benefit from the Complainant’s celebrity status.
The Respondent has not filed a Response to the Complaint and so has not made any representations concerning any rights or any legitimate interest in the domain name.
The Panel finds that the Respondent has no rights nor legitimate interest in the disputed domain name <sarahkozer.com> .
C. Registered and Used in Bad Faith
Under Paragraph 4(b)(iv) of the Policy, evidence of registration and use of a domain name in bad faith shall be evidence, and includes a statement of the following circumstances:
“4(b)(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant alleges that the Respondent’s act in registering the domain name <sarahkozer.com> was for the sole purpose of intentionally seeking to attract for commercial gain, Internet users to its website or other on-line locations, and/or by creating a likelihood of confusion with the Complainant’s mark of source or endorsement.
The Complainant alleges that the Respondent knew at all times before, during and after registering the domain name that it did not own or have any legal rights to the name or mark “SARAH KOZER”. It has used the domain name to mislead and divert Internet users who may search for information about the Complainant, to the Respondent’s other websites. The Complainant alleges that at no time since the Respondent’s registration of its website, has the Respondent actually used the site for purposes other than to exploit the Complainant’s celebrity status.
The Respondent registered the domain name when the Complainant’s was building her business reputation. He obviously saw an advantage to move to acquire the domain name when the Millionaire show was still in process. However, there was no other purpose than to profit from the Complainant’s name. The Respondent relied on the hit television show reviews, numerous magazines and newspaper articles discussing the Complainant’s motion pictures, along with the news of her posing for Playboy, to confuse Internet users into believing that the Complainant sponsored, endorsed or was somehow affiliated with the website in issue. Because the links listed on the website are sexual in nature, i.e. dating, bondage and pornography, this website was the Respondent’s ploy to make innocent Internet users believe that the Complainant was somehow endorsing the service the links provided.
Therefore the Respondent has registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sarahkozer.com> be transferred to the Complainant.
James G. Fogo
Dated: June 23, 2004